Composite Trade Marks & the Odds of Registration

The well-established principle of entirety which states that a trademark is to be seen and/or read as a whole at times may be overlooked by the Registrars. However, this remains as one of the important factors in ascertaining the registrability of a trademark as is again established by the Delhi High Court in its recent order. The present writ petition was filed by Dubai Islamic Bank to challenge the refusal of registration of the trade mark ‘Dubai Islamic Bank – The Better Way to Bank ‘ which had been refused under absolute grounds of refusal of trademarks on the ground that the same is indicative of the geographical origin and is descriptive in nature owing to the words ‘Dubai’ and ‘Bank’.

The Court while setting aside the disputed order held that the same was quite general in nature and did not consider the composite nature of the mark ‘Dubai Islamic Bank – The Better Way to Bank’ which also included other elements such as the slogan. As such, the Court was of the view that the mark – ‘Dubai Islamic Bank – The Better Way To Bank ‘ is clearly a composite mark which does not only consist of the words ‘Dubai’ and ‘Bank’ in isolation but also consists the slogan ‘- The Better Way To Bank ‘. Whilst analysing the impugned refusal, the Court held that the said mark should not have been refused simply on the basis of the fact that there was an indication of the geographical origin i.e., the word ‘DUBAI’ and that mere presence of the word ‘BANK’ therein would not by itself make it inherently descriptive and/or non-distinctive. It further held that in order to ascertain the registrability of the said mark, the list of banks whose names were registered constituting the word ‘bank’, their geographical locations and the global registrations of the Petitioner were to be considered. Additionally, the settled legal position in relation to the slogans and taglines being registrable as trademarks was also required to be taken into account.

The Petitioner cited a number of banks and their respective slogans which hinted at the geographical origin of the said banks, but were still granted registrations. For instance, case in point – DBS Bank which has the tagline ‘Living, Breathing Asia’ stands registered. Closer to home, Indian banks along with taglines such as Bank of Baroda-India’s International Bank and Karnataka Bank: ‘Your Family Bank, Across India’ have also been successfully registered.

The Court while remanding the matter back to the Registrar of Trade Marks directed it to proceed with the application in accordance with law and expressly stated that an opportunity of being heard be given to the Petitioner in order to place on record the aforementioned material and any other judicial precedent that the Petitioner would want to rely upon. Accordingly, the writ petition was allowed without any order as to costs.

In view of what has been held above, the Trade Marks Office needs to resort to a more comprehensive approach while granting registration to a trademark considering all the relevant factors. If the factors surrounding the registrability of a trademark are ignored, it can have a severe impact on the right holders/stakeholders, thereby causing a huge loss of business, reputation or profits to them.

Article by Manisha Singh (Partner) & Mahima Madan (Associate).

1st published on Lexology.